A & H Sportswear Co. v. Victoria's Secret Stores
| Decision Date | 12 March 2001 |
| Docket Number | No. CIV. A. 94-7408.,CIV. A. 94-7408. |
| Citation | 134 F.Supp.2d 668 |
| Parties | A & H SPORTSWEAR CO., INC. and Mainstream Swimsuits, Inc., Plaintiffs, v. VICTORIA'S SECRET STORES, INC., and Victoria's Secret Catalogue, Inc., Defendants. |
| Court | U.S. District Court — Eastern District of Pennsylvania |
Gus Milides, Norman Seidel, Easton, PA, Arthur H. Seidel, Stephen J. Meyers, Philadelphia, PA, for plaintiffs.
Frank J. Colluci, Richard P. Jacobson, New York City; H. Robert Fiebach, David I. Bookspan, Lillian E. Benedict, Philadelphia, PA, for defendants.
Presently before this Court is Plaintiffs' Motion For Hearing on Contempt and Additional Hearing filed January 11, 2001, Plaintiffs' Brief in Support of the Motion, filed on February 8, 2001, Defendants' Memorandum in Opposition to the Motion, filed on January 29, 2001, Plaintiffs' Reply Brief filed on February 9, 2001, and Defendants' Supplemental Memorandum filed on February 28, 2001. For the reasons set forth below, Plaintiffs' Motion is denied in its entirety.
Civil contempt is a sanction to enforce compliance with an order of the court or to compensate for losses or damages sustained by reason of the noncompliance. McComb v. Jacksonville Paper, Co., 336 U.S. 187, 191, 69 S.Ct. 497, 93 L.Ed. 599 (1949); Robin Woods Inc. v. Woods, 28 F.3d 396, 400 (3d Cir.1994); McDonald's Corp. v. Victory Inv., 727 F.2d 82, 87 (3d Cir.1984); McGoff v. Rapone, 78 F.R.D. 8, 28 (E.D.Pa.1978). Neither of these rationales supports a judgment of civil contempt in this case. The later rationale is inappropriate because Plaintiffs have not put forth any evidence of losses or damages resulting from the conduct of which they complain. See McGoff, 78 F.R.D. at 28. The first rationale does not apply because Plaintiffs cannot make out a prima facie case.
To establish that a party is liable for civil contempt a plaintiff must prove three elements: "(1) that a valid order of the court existed; (2) that the defendants had knowledge of the order; and (3) that the defendants disobeyed the order." Roe v. Operation Rescue, 54 F.3d 133, 137 (3d Cir.1995). These elements must be proved by clear and convincing evidence. Harris v. City of Philadelphia, 47 F.3d 1311, 1321 (3d Cir.1995). A court should not hold a party in contempt: "where there is ground to doubt the wrongfulness of the respondent's conduct." Littlejohn v. Bic Corp., 851 F.2d 673, 683-84 (3d Cir.1988); Quinter v. Volkswagen of America, 676 F.2d 969, 974 (3d Cir.1982); Fox v. Capital Co., 96 F.2d 684, 686 (3d Cir.1938). Furthermore, the resolution of ambiguities favors the party charged with contempt. Harris, 47 F.3d at 1350.
It is axiomatic that we cannot find the Defendants guilty of contempt for failing to use a disclaimer if there is no valid order of this Court requiring them to do so. On July 1, 1997, we issued a Revised Order permanently enjoining the Defendants from using the mark "The Miracle Bra," "Miraclesuit," or any other "miracle" mark in connection with swimwear, including the promotion, advertising, sale and identification of swimwear, unless it used a specific disclaimer.1 A & H Sportswear Co. v. Victoria's Secret Stores, 967 F.Supp. 1457, 1482 (E.D.Pa.1997)("A & H II"). The disclaimer had to be published on every page of any catalogue spread or magazine advertisement in which a "miracle" mark appears to identify swimwear on the same page. Id. In addition, if the Defendants chose to utilize a toll-free number at any point in their catalogue, the number had to appear within one half inch of each disclaimer.2 Id. at 1483.
This Order was vacated on January 21, 1999, in A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 166 F.3d 197 (3d Cir.1999)("A & H III"), and the case was remanded to us. We then found that the marks MIRACLESUIT® and THE MIRACLE BRA™, were not similar. A & H Sportswear Co. v. Victoria's Secret Stores, 57 F.Supp.2d 155, 169 (E.D.Pa.1999)("A & H IV"). This finding was based in part on the presumption that the Defendants would continue to adhere to the disclaimer discussed above when marketing their swimwear. Id. In reaching this conclusion, we noted that the Defendants were no longer required by an order of court to use the disclaimer because the Third Circuit had vacated the remedy issued in A & H II. Id.
This decision was affirmed in part and vacated in part in A & H Sportswear Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198 (3d Cir.2000)("A & H V").3 The Third Circuit stated that it considered Victoria's Secret legally bound to continue the disclaimer practice. Id. at 219. Concluding that the Defendants were "legally bound" to follow the particular disclaimer practice is not equivalent to a court ordering that the practice be followed. We cannot use our contempt power to enforce every legal obligation. It is available only to vindicate the authority of this Court by punishing past acts of disobedience or to coerce parties into complying with a court order. See McDonald's, 727 F.2d at 86. Failure to follow the disclaimer practice violates an obligation owed to the Plaintiffs, not a duty owed to this Court.
Curiously, both parties contend that, during the time in question, there was a valid order of this Court in effect requiring the use of a disclaimer. However, each points to different orders issued in the history of this case. The Defendants discuss the Order issued by this Court in connection with A & H II.4 See 967 F.Supp. at 1482. Violation of this Order could not serve as the basis for a finding of contempt, because, as discussed above, this order was vacated in A & H III and was not reinstated on remand. See A & H III, 166 F.3d at 210; A & H IV, 57 F.Supp.2d at 169. In their reply brief, the Plaintiffs state that their motion charged Victoria's Secret with violating "the District Court's Order of July 29, 1999." Pls.' Reply Br. at I. The brief goes on to cite the text of the A & H IV itself and not the order issued in conjunction with that opinion. Id. at 1-2. The July 29, 1999 Order does not mandate the use of any disclaimer or discuss any such practice. A & H IV, 57 F.Supp.2d at 178-179. In fact, this Order does not grant any affirmative relief and finds in favor of the Defendants. Id. Similarly, A & H V, which partially vacated the July 29, 1999 Order, does not enjoin the Defendants from using a "miracle" mark.5 The parties are simply incorrect in their conclusion that a valid order of this Court mandated that the Defendants follow a particular disclaimer practice.
However, the fact that this Court did not order that the Defendants use a disclaimer when marketing THE MIRACLE BRA™ swimwear does not mean that the Defendants were free to sell their swimwear without a disclaimer. In A & H IV, we found that the use of the disclaimer created a distinction between the two marks. 57 F.Supp.2d at 169. If the Defendants had refused to use a disclaimer, our finding, necessarily, would have been different. Id. While failure to use a disclaimer may not render the Defendants in contempt of an order of this Court, such an action by Defendants would be a violation of their legal obligation. Id. Accordingly, we will treat Plaintiffs' Motion as a Motion to Reopen based upon the Defendants alleged failure to abide by their representations that they would use a disclaimer.
Plaintiffs attempt to use the following quote from A & H V to support their contention that the Defendants failed to adhere to the disclaimer practice:
We consider Victoria's Secret legally bound to continue the disclaimer practice .... It would be well advised to continue to place the disclaimer near to the telephone number in the catalogue. We judicially notice the fact that in one recent catalogue the disclaimer was not so near the telephone number, a lapse that is potentially problematic.
Pls.' Mot. at 1-2 quoting 237 F.3d at 219 n. 11. The Third Circuit did not provide any descriptive information about this lapse. See id. Nor have the Plaintiffs included a copy of the catalogue or provided any other information about this alleged infraction. We have not attempted our own examination of whether the disclaimer was properly used in the hundreds of catalogues that the Defendants have published in "recent" history.6 Absent some additional information from the Plaintiffs we decline to reopen this case on the basis of this statement in A & H V. See Pozy Decl. at ¶ 6 ().
Plaintiffs also contend that since December 1, 2000, the Defendants marketed THE MIRACLE BRA™ swimwear on the internet without any disclaimer.7 Pls.' Mot. at 2. Defendants argue that they have, since the inception of their web site8, used the disclaimer on each and every page9 at which a consumer may commence a purchase of THE MIRACLE BRA™ swimwear. Pozy Decl. ¶¶ 9, 13-16; Fish Decl. ¶¶ 7-8.10 We have considered the evidence and arguments put forth by both parties and we accept the explanation provided by James J. Pozy, the Director of Inventory Control for Victoria's Secret Catalogue, Inc.11
Our decision in A & H IV does not specifically address internet marketing of THE MIRACLE BRA™ swimwear. However, it does state that in concluding that the two marks were not similar we relied on the Defendants representations that it would continue to use a disclaimer when marketing the swimwear. 57 F.Supp.2d at 169. The Defendants agreed to do more than just utilize the disclaimer in their catalogues. Id. at 176. Failing to use a disclaimer on the web site could potentially jeopardize our finding that there is no similarity between the two marks. Id.
The Defendants argue that they only had to use the disclaimer in print media and that they only...
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A & H Sportswear Co. v. Victoria's Secret Stores
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